DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-19 is/are pending.
Claim(s) 1-12, 14-17, 19 is/are rejected.
Claim(s) 13, 18 is/are withdrawn from consideration.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-12, 14) in the reply filed on 03/25/2025 is acknowledged.
Applicant’s election without traverse of Species E (resin layer is acrylic resin) in the reply filed on 03/25/2025 is acknowledged.
Claim(s) 13 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/25/2025.
Newly submitted claim 18 is directed to a species that is independent or distinct from the invention originally claimed for the following reasons: the species (A)-(G) of the resin layer lack unity for the reasons discussed in detail in the previous Office Action mailed 02/27/2025.
Since applicant has received an action on the merits for the originally presented species (E), this species (E) has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 18 is withdrawn from consideration as being directed to a non-elected species. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Claim Objections
The objections in the previous Office Action mailed 07/16/20205 have been withdrawn in view of the Claim Amendments filed 10/21/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-3, 6-12, 14-17, 19 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (A) limited ranges of resin layer compositions; does not reasonably provide enablement for the entire recited compositional range of (A) resin layer compositions as a whole. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make the claimed laminated film exhibiting:
the recited properties (claim 1):
(a) XANES spectrum satisfying I (15º) - I (90 º) ≤ 0.1;
and optionally with the additional recited properties (claim 2):
(b) surface elastic modulus;
and optionally with the additional recited properties (claim 3):
(c) tape peel strength; and
(d) domain size;
and optionally with the additional recited properties (claim 6):
(e) water contact angle;
and optionally with the additional recited properties (claim 7):
(f) XANES spectrum satisfying [I (15°) - 0.1] / I (90°) > 1;
and optionally with the additional recited properties (claim 8):
(g) ratio of peak intensity;
and optionally with the additional recited properties (claim 7):
(h) exothermic peak temperature (Tc);
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A), the claims are relatively broad -- for example, but not limited to:
• The majority of the claims contains only minimal limitations on the composition of the resin layer as a whole;
• The claims do not contain any requirements on the type (as long as said long-chain alkyl resin contains at least one group containing C12-C35 carbons) or minimum amount of release agent (A) (as the long-chain alkyl resin is present in any non-zero amount) in the resin layer as a whole;
• Claim 10 do not contain any requirements on the minimum amount of at least one resin or compound in the resin layer as a whole;
• The claims do not contain any limitations on the type of acrylic resin (or polyester resin) in the resin layer.
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., polymeric components such as other acrylic or non-acrylic resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the resin layer as a whole, as long as release agent (A) is present in a non-zero amount.
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., polymeric components such as other acrylic or non-acrylic resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the release agent (A) as a whole, as long as the C12-C5 carbon chain alkyl resin is present in a non-zero amount.
With respect to Wand factor (B), Applicant states that prior art films are difficult to produce effective release films with non-silicone-based release layers, especially for demanding electronic applications.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach the production of polyester-containing films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8).
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses very limited ranges of: (A) resin layer compositions as a whole; which result in laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8).
With respect to Wand factor (H), the working Examples in the Specification provide evidence that the (A) film compositions as a whole (in particular the type of release agent) can materially (and possibly unpredictably) affect the (a) XANES spectrum and other properties (b)-(h). Therefore, it is the Examiner’s position that undue experimentation would be required to produce laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8) -- for example, but not limited to:
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• the composition of the resin layer as a whole -- The disclosure as originally filed only discloses producing laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8), using resin layer compositions containing a limited range of (i) acrylate-based resins containing long-chain alkyl groups with 12-22 carbon atoms, optionally with a limited range of: (i) binders (i.e., acrylic resin; polyester resin); and (ii) a limited range of crosslinking agents (i.e., melamine resin; oxazoline compound); wherein the above resin layer compositions constitute the substantial or effective entirety of the resin layer as a whole.
However, the present claims use the open term “comprises” with respect to the composition of the resin as a whole, which allows for nearly any amount(s) of any material(s) (polymeric; non-polymeric organic; inorganic; etc.).
Regarding claim 1, the claim does not contain any limitations on:
• the amount of long-chain alkyl group in the release agent (A);
• the amount of release agent (A) in the resin layer as a whole;
• the minimum amount of the recited release agent (A) in the resin layer as a whole, as long as the release agent (A) is present in any non-zero amount.
The Examiner has reason to believe that:
(i) a minimum amount of release agent (A) needs to be present in the resin layer as a whole;
(ii) a minimum amount of C12-C25 long-chain alkyl resin needs to be present in the release agent (A) as a whole;
(iii) a minimum amount of C12-C25 long-chain alkyl groups needs to be present in the C12-C25 long-chain alkyl resin;
in order to produce laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8).
Furthermore, the Examiner has reason to believe the above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8) would be materially affected by presence of non-trivial amounts of other components (e.g., other polymers; other non-polymeric compounds or additives; etc.) in the release agent (A) as a whole and in the resin layer as a whole.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8), without undue experimentation using resin layer compositions which are different from those utilized in the working Examples in the Specification -- for example:
• using amounts of C12-C25 long-chain alkyl groups in the C12-C25 long-chain alkyl resin of release agent (A) which is different from the amounts of C12-C25 long-chain alkyl groups in the long-chain alkyl resins used in the Examples of the Specification;
• using amounts of C12-C25 long-chain alkyl resin in release agent (A) which is different (e.g., 80 wt% or 50 wt% or 20 wt% or 10 wt% or 5 wt% or 1 wt%, etc.) from the 100 wt% long-chain alkyl resin in the release agent (A) used in the Examples in the Specification;
• using amounts of release agent (A) which is different (e.g., 10 wt% or 5 wt% or 1 wt% or 0.1 wt%, etc.) from the 20-100 wt% of release agent (A) used in the Examples in the Specification;
• using other types and/or amounts of “at least one resin or compound” which are different (e.g., urethane resins, polycarbonate resins, olefin-based resins, epoxy resins, etc.) from the acrylic resin, acrylic/melamine resin mixtures, polyester resin; polyester/melamine resin mixtures; polyester/oxazoline resin mixtures used in the Examples in the Specification;
• using other types of acrylic resin which are different (e.g., made from different monomers, etc.) from the acrylic resin of Reference Example 13;
• using other types of polyester resin which are different (e.g., made from different monomers, etc.) from the polyester resin of Reference Example 14;
• etc.
Furthermore, Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce a laminated films which exhibit the recited combination of above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8), without undue experimentation using resin layer compositions which are different from those utilized in the working Examples in the Specification -- for example, containing non-trivial amounts (e.g., 10 wt% or 20 wt% or 30 wt% or 50 wt% or 70 wt% or 90 wt%, etc.) of one or more other component(s) (e.g., polymeric components such as other acrylic or non-acrylic resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.).
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make laminated films which exhibit the recited combination of (a) XANES spectrum and other properties (b)-(h), over the entire scope of the present claims without undue experimentation, particularly in view of the working Examples and Comparative Examples in the specification which indicate that the above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8) can be materially (possibly unpredictably) affected by differences in the composition of the resin layer as a whole.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 16 is vague and indefinite because the claim states that the “the polyester film comprises one or more members selected from the group consisting of ethylene terephthalate, propylene terephthalate, ethylene-2,6-naphthalate, butylene terephthalate, propylene-2,6-naphthalate, polyethylene-2,6-naphthalate and ethylene-α,β-bis(2-chlorophenoxy)ethane-4,4-dicarboxylate.” However, the compounds: “ethylene terephthalate”; “propylene terephthalate”; “ethylene-2,6-naphthalate”; “butylene terephthalate”; “propylene-2,6-naphthalate; and “ethylene- α,β-bis(2-chlorophenoxy)ethane-4,4-dicarboxylate”; are, by themselves, are merely repeating units formed by only two monomers, but are not polymers, which require multiple repeating units. Therefore, it is unclear whether the claim intends to require: (i) the presence of polymers containing the recited repeating units and should be clearly identified as such (e.g., “poly(ethylene terephthalate)”; “ethylene-terephthalate-containing resin”; “ethylene-terephthalate-containing polymer”; etc.); or (ii) the presence of non-polymeric compounds composed of two monomers.
Claim Rejections - 35 USC § 103 (AIA )
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• WO 2019-131163 A1 (SHOJI-WO ‘163), relying on SHOJI ET AL (US 2020/0335360) as English language translation,
in view of FUNATSU ET AL (US 2016/0222178),
and in view of ZHANG ET AL (US 2010/0028694),
and in view of RODRIGUEZ ET AL (US 2019/0176188).
SHOJI-WO ‘163 discloses a coated film comprising:
• a release layer (corresponding to the recited “resin layer”) comprising:
• a binder resin (e.g., acrylic resin, etc.);
• a peelability-imparting additive (corresponding to the recited “release agent (A)”) (e.g., compounds containing long-chain alkyl groups, etc.);
wherein the release layer has:
• a surface elastic modulus (measured using atomic force microscope (AFM)) is 50-3000 MPa (preferably 500-2000 MPa);
• a releasability (corresponding to the recited “tape peel strength”) rating of “S” (less than 0.3 N/50 mm) or “A” (less than 3.0 N/50 mm to 0.3 N/50 mm);
• a base film (corresponding to the recited “resin base film”).
(SHOJI ET AL ‘360, entire document, paragraph 0018, 0022, 0025, 0031, 0039-0041, 0043-0046, 0076, etc.) (see corresponding portions of SHOJI-WO ‘163) However, the reference does not specifically discuss domain sizes or the number of carbons in long-chain alkyl release agents.
FUNATSU ET AL ‘178 discloses that it is well known in the art to utilize long-chain alkyl group-containing compound, wherein the long-chain alkyl group contains at least 6 carbon atoms (preferably at least 12 carbon atoms) and up to 30 carbon atoms, as a release agent for films with release coatings (e.g., transparent release coatings, etc.). (paragraph 0032-0037, etc.)
ZHANG ET AL ‘694 discloses that it is well known in the art that it is desirable to keep the domain size in coatings to less than the wavelength of visible light (e.g., less than 50 nm, etc.) in order to minimize light scattering and obtain a highly transparent coating. (paragraph 0014, 0028, 0039, 0044, etc.)
RODRIGUEZ ET AL ‘188 discloses that it is well known in the art that it is desirable to keep the domain size in non-homogenous or multi-phase coatings to less than the wavelength of visible light (e.g., less than 400-800 nm, such as 50 nm, etc.) in order to minimize light scattering and obtain a visually transparent coating. (paragraph 0067-0068, 0102)
Regarding claims 4-5, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the compositions of the release layer (corresponding to the recited “resin layer”) and the base film (corresponding to the recited “resin base film”) in SHOJI-WO ‘163 to minimize the size of incompatible or immiscible phases or domains in the release layer and base film to less than the wavelength of visible light (e.g., less than 50 nm) as suggested in ZHANG ET AL ‘694 and RODRIGUEZ ET AL ‘188 in order to produce highly transparent release films for specific applications (e.g., optical applications, etc.).
Further regarding claim 4, one of ordinary skill in the art would have used known long-chain alkyl group-containing release agents containing C12-C30 long-chain alkyl groups as disclosed in FUNATSU ET AL ‘178 as the long-chain alkyl group-containing release agents in the release layers of SHOJI-WO ‘163 in order to provide useful release layers for films.
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “The record establishes that the claimed invention is commensurate in scope with the examples of the specification” because “all inventive examples meet the limitation "I(15°) - I(90°) ≥ 0.1" of Claim 1, whereas none of the comparative examples
meets such limitation.” However, while the inventive Examples in the Specification indicates that a certain range of resin layer compositions satisfy above properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8), the disclosure as originally filed does not provide adequate guidance how to obtain the required properties (a) (claim 1), and optionally one or more of the above additional properties (b)-(h) (claims 2-3, 6-8) utilizing resin layer compositions which materially differ from the resin compositions in the inventive Examples in the Specification in one or more aspects.
(B) Applicant argues that “It does not require undue experimentation to determine whether a resin layer can produce a laminated film that meets the "I(15°) - I(90°) ≥ 0.1" limitation of Claim 1. A person of ordinary skill can do so based on the record of this application.” However, as discussed exhaustively during the Interview on 09/23/2025, the pertinent issue regarding the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (scope of enablement) is not, given a predetermined resin layer composition, whether the resulting resin layer can satisfy "I(15°) - I(90°) ≥ 0.1" requirement, but rather whether one of ordinary skill in the art can produce a resin layer which meets the "I(15°) - I(90°) ≥ 0.1" limitation using resin layer compositions which are encompassed by the present claims, but are materially different from the limited range of (A) resin layer compositions utilized in the working Examples in the specification. For example, the disclosure as originally filed fails to provide any guidance as to: (i) the types of adjustments which need to made; and/or (ii) the direction of experimentation needed; with respect to a resin layer composition in order to produce a resin layer which satisfies the "I(15°) - I(90°) ≥ 0.1" requirement using a resin layer composition which contains a significant amount of other types of resins (e.g., silicone resin, fluorocarbon resins, olefin-based resins, urethane resins, epoxy resins, etc., some of which have been explicitly shown to produce a resin layer which is incapable of satisfying the "I(15°) - I(90°) ≥ 0.1" requirement).
(C) Applicant argues that “There is no reason to believe, and the evidence of record does not show, that the "I(15°) - I(90°) ≥ 0.1" limitation only selectively applies to certain resin
compositions.” However, contrary to Applicant’s assertions, Applicant’s own Comparative Examples 1-8 clearly establishes that differences in resin layer composition (e.g., the type of resin(s) used, etc.) results in resin layers which fail to satisfy the "I(15°) - I(90°) ≥ 0.1" requirement and possibly other physical property requirements in the dependent claims. Therefore, the Examiner has reason to believe that the "I(15°) - I(90°)” parameter of a resin layer is materially affected by the composition of the resin layer. Applicant has not provided persuasive objective evidence that the "I(15°) - I(90°)” parameter is entirely or substantially independent of the composition of the resin layer, particularly in view of the Comparative Examples 1-8 in the Specification.
(D) Applicant argues that the Claim Amendments filed 10/21/2025 fully address the scope of enablement rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the previous Office Action and that the present claims are fully enabled over the entire scope of the present claims. While the Claim Amendments filed 10/21/2025 address some of the issues related to insufficient scope of enablement, a significant number of issues remain unresolved for the reasons discussed in detail in the present Office Action.
(E) Applicant’s arguments with respect to claims 4-5 have been considered but are moot in view of the new grounds of rejection necessitated by the Claim Amendments filed 10/21/2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
MERRILL ET AL (US 2019/0284357) disclose release layers containing long chain alkyl release agents.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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February 21, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787